Media C.A.T Limited -v- others
In the Patents County Court before Judge Birss QC
Counsel for the Claimant: Mr Tim Ludbrook instructed by ACS Law Solicitors
Counsel for five Defendants: Mr Francis Davey instructed by Lawdit Solicitors
Counsel for the three Defendants: Mr Guy Tritton instructed by Ralli Solicitors
The Court, pursuant to CPR 3.3(1) and by its own initiative called a directions hearing for 17 January 2011 at 10:30am see: Media C.A.T. Limited -v- Allan Billington  EWPCC 018.
The purpose of a directions hearing is to set out what needs to be done, by whom and when. However, this was no ordinary directions hearing.
On 13 January 2011 ACS Law, on behalf of the Claimant, sent a total of 27 notices of discontinuance to the Defendants and Court. HHJ Birss QC was, to say the least, surprised by ACS Law’s actions, particularly as this was done shortly before Monday’s hearing.
Hearing on 17 January 2011
Due to counsel for the Claimant being instructed late in the day, his instructions were to seek an adjournment of 2 weeks. However, adjournment of 1 week was ordered (see below).
There were two issues identified: (1) can Media C.A.T. Limited show its right to sue; and (2) do the notices of discontinuances require court permission.
Notices of Discontinuance: Law
CPR 38.2 (a) provides a general right that a claimant may discontinue a claim at any time. However, there are certain instances in which that right can be exercised provided the court’s permission is obtained.
The relevant exception was CPR 38.2 (c) which states that where there is more than one claimant, notice to discontinue cannot be served unless every other party to the proceedings agrees or the court gives permission.
HHJ Birss QC raised an interesting issue, that whilst (at the moment) this is not a case with multiple claimants, it is nevertheless a case which should have multiple claimants.
The reason why there should be multiple claimant’s in these claims is because by section 102(1) of the Copyright, Designs and Patents Act 1988 CDPA 1988: (“CDPA”): “where an action for infringement of copyright brought by the copyright owner or an exclusive licensee relates (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the copyright owner or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant.”
In addition, CPR 19.3(1) reads: “where a claimant claims a remedy to which some other person is jointly entitled with him, all persons jointly entitled to the remedy must be parties unless the court orders otherwise.”
The Judge sought submissions from the parties as to whether the court should be giving permission to allow the notices of discontinuance to stand.
As counsel for Media C.A.T Limited had been instructed late in the day, it was not possible for the Judge to take submissions on this. After consulting the court diary the Court ordered that:
1. There be a hearing listed on 24 January 2011 at 10:30 for submissions on whether Court permission is required to discontinue any of the claims.
2. A stay is imposed on the Actions pending the outcome of 1 above.
3. The effect of the notices of discontinuance were suspended pending the outcome of 1 above.
4. Costs reserved.
What does this all mean?
The major effect is that the notices of discontinuances have not taken effect; the claims remain live pending the outcome of the court’s decision on whether it needs to give permission. However, defendants should bear in mind that they can move to accepting the notices by agreeing a consent order with the claimant.
It will certainly be interesting to hear the parties’ submissions on this point in that if the court accepts the argument that CPR 38.2(2)(c) stands alone uninfluenced by the themes of section 102(1) of the CDPA and CPR 19.3 the effect of the notices of discontinuance will take effect. The costs consequences being that the claimants will be liable for the costs incurred by the defendant (unless the court orders otherwise).
If you have received a notice of discontinuance then I urge you to contact me before the next hearing.
If you’re interested in Commercial Litigation and would like to find out more, please call Michael Coyle on 0800 0862 0157 or email firstname.lastname@example.org for a free no obligation chat.